[GNSO-RPM-WG] Additional background information on "word marks" and the limitations of the TMCH

[Mary Wong]

Dear all,

Following on from the Working Group call earlier today and to facilitate your deliberations as to what ought to constitute a “word mark” for purposes of inclusion in the Trademark Clearinghouse (TMCH), staff thought it might be helpful to provide you with the specific references from which our remarks concerning the purpose and remit of the TMCH were drawn. We hope that this information is useful, and further underscores why it is likely critical for the Working Group to agree on what, specifically, the term “word mark” covers in order to develop a clear policy recommendation for this topic.

From ICANN Org’s 2015 paper consolidating community feedback on the RPMs developed for the 2012 New gTLD Program (emphasis added):

  *   “The [TMCH] Guidelines are designed for review of trademark submissions according to a standard that does not favor one jurisdiction over another.
  *   While there is no generally accepted or international definition of a word mark, there are multiple laws that distinguish between a mark that is comprised of characters versus a mark that protects the manner in which those characters are presented.
  *   There are over 100 definitions of a “word mark” across trademark jurisdictions.
  *   The territorial component of trademark rights does not lend itself to any one definition of universal applicability.
  *   A review of UDRP case law indicates that the analysis of whether a domain name is confusingly similar in terms of a mark that incorporates graphic or design elements occurs on a case by case basis.”

From ICANN Org’s Explanatory Memorandum on implementing the matching rules (September 2012, updated July 2016), emphasis added:

  *   “Trademarks can include elements that are not able to be represented in the DNS at the present time. For example, trademarks in many jurisdictions around the world can include colors, punctuation, and design elements such as graphical images … It is explicitly beyond the scope and remit of the Clearinghouse to perform legal analysis, provide legal advice or apply discretionary assessments as to the range of domain names that a party owning given a certain trademark may or should be interested in protecting.”

From Deloitte’s responses to the Working Group’s questions (2017):

  *   Deloitte explained how it conducts its checks as follows: “For those marks that to do not exclusively consist of letters, words, numerals or special characters, the verification agents will verify the trademark name based upon the image on the trademark certificate. In the event that there is any doubt about the order in which the characters appear, the description provided by the Trademark office will prevail. In the event no description is provided, such Trademark records will be allocated to a Deloitte internal team of specialists with thorough knowledge of both national and regional trademark law who will conduct independent research on how the trademark is used, e.g. check website, or they may request that the trademark holder or agent provide additional documentary evidence on how the Trademark is used.”
     *   Note that the TMCH Guidelines specifies, in Section 5.2.1, that:
“For marks that do not exclusively consist of letters, words, numerals, special characters: The recorded name of the Trademark is an identical match to the reported name as long as the name of the Trademark includes letters, words, numerals, keyboard signs, and punctuation marks (“Characters”) that are:

        *   predominant; and
        *   clearly separable or distinguishable from the device element; and
        *   all predominant characters are included in the Trademark Record submitted to the Clearinghouse in the same order they appear in the mark”.


  *   In response to the WG’s question as to how many device or image marks have been validated, Deloitte’s response was that: “As there is no unilateral international definition of different types of trademarks and the TMCH was designed as a global trademark database covering all jurisdictions the TMCH cannot make a distinction in types of marks and therefor no data is collected on the types of marks submitted in the TMDB”.

Thanks and cheers
Julie, Ariel & Mary

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